ERIC RESH

Patent Trials and Appeals BoardMay 25, 2021

2021002037 (P.T.A.B. May. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/844,561 03/15/2013 ERIC V. RESH RESH-P3841.3 9731 21259 7590 05/25/2021 J. MARK HOLLAND AND ASSOCIATES J. Mark Holland 19800 MACARTHUR BLVD SUITE 300 IRVINE, CA 92612 EXAMINER SCRUGGS, ROBERT J ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 05/25/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): OFFICE@JMHLAW.COM mholland@jmhlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC V. RESH Appeal 2021-0020371 Application 13/844,561 Technology Center 3700 ____________ Before ANTON W. FETTING, MICHAEL C. ASTORINO, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the Examiner’s decision to reject claims 4, 5, 13–20, and 27–29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 Co-pending US Application No. 15/708,038 is on appeal (Appeal 2021-001239) and is being decided concurrently with this appeal. See Appeal Br. v. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Resh, Inc. Appeal Br. iv. Appeal 2021-002037 Application 13/844,561 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 4 and 27 are the independent claims on appeal. Claim 27, reproduced below, is illustrative of the claimed subject matter. 27. An elongated pole having at least four attachment holes adjacent one end and a gripping portion adjacent the other end, selected pairs of said holes capable of retaining a cleaning tool without engaging any of said holes other than one pair of said selected pairs, said pole being of a length such that the end of the pole having said attachment holes reaches the bottom surface of a swimming pool when a standing user is holding the gripping portion of the pole. Appeal Br., Claims App.3 References The prior art relied upon by the Examiner is: Name Reference Date Lanzarone et al. (“Lanzarone”) US 3,407,424 Oct. 29, 1968 Pansini US 4,247,216 Jan. 27, 1981 Balint et al. (“Balint”) US 4,325,157 Apr. 20, 1982 McFarland US 5,173,181 Dec. 22, 1992 Polzin et al. (“Polzin”) US 5,983,455 Nov. 16, 1999 Rejections Claim 27 is rejected under 35 U.S.C. § 102(a) as anticipated by Pansini.4 3 “Appeal Br., Claims App.” refers to the corrected Claims Appendix, filed Sept. 14, 2020. 4 The Examiner determines that “[t]he present application is being examined under the pre-AIA first to invent provisions.” Final Act. 2. The Examiner rejects claim 27 under “pre-AIA 35 U.S.C. § 102(a)(1),” which appears to be Appeal 2021-002037 Application 13/844,561 3 Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over Pansini in view of McFarland. Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over Pansini in view of McFarland and Polzin or Lanzarone. Claims 4, 5, and 13–20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pansini in view of Balint, McFarland, and Polzin or Lanzarone. ANALYSIS Anticipation Independent claim 27 recites “[a]n elongated pole having at least four attachment holes adjacent one end . . . , selected pairs of said holes capable of retaining a cleaning tool without engaging any of said holes other than one pair of said selected pairs.” Appeal Br., Claims App. The Examiner finds that Pansini’s pool pole 10 has two pairs of apertures 12, 12 and 14, 14, and that these four apertures correspond to the claimed “at least four attachment holes adjacent one end.” Final Act. 3; see Pansini Figs. 1, 2, 4. The Examiner explains that upper and lower apertures 12, 12 comprise a first pair of holes, and upper and lower apertures 14, 14 comprise a second pair of holes. See Ans. 21. The Examiner finds that each of these pairs of holes is “capable of retaining a cleaning tool without engaging any of said holes other than one pair of said selected pairs,” as recited in claim 1. Final Act. 3. a typographical error or minor oversight, because the pre-AIA version of the statute 35 U.S.C. § 102(a). Appeal 2021-002037 Application 13/844,561 4 The Appellant argues that the Examiner’s findings are not adequately supported because Pansini does not disclose an elongated pole with at least four attachment holes where selected pairs of the holes are capable of retaining a cleaning tool. See Appeal Br. 96–98; Reply Br. 11–13. The Appellant asserts that Pansini discloses a first pole (i.e., a domestic pool pole) with one pair of apertures for retaining a tool and a second pole (i.e., a foreign pool pole) with one pair of apertures for retaining a tool. See Appeal Br. 96–98; Reply Br. 11–13. More specifically, the Appellant asserts that apertures 12, 12 of Pansini’s domestic pool pole, as a pair, engage with spring mechanism 24 to retain brush 40. And, the foreign pool pole’s apertures, which are similar to apertures 14, 14, as a pair engage with spring mechanism 24 to retain a tool. Pansini col. 2, ll. 18–26. The Appellant also asserts that the pair of holes for each of the domestic and the foreign pool poles engages with different V-clips. See Reply Br. 11–13. The Appellant’s argument is not persuasive. At the outset, we agree with the Examiner that claim 27 does not require the same attachment mechanism (e.g., V-clip) to be able to physically engage with each of the selected pairs of holes to retain a cleaning tool. See Ans. 21–22. Additionally, we note that claim 27 does not require a particular style of attachment mechanism (e.g., a V-clip) to engage with the selected pairs of holes. We find that Pansini’s figures show apertures 12, 12, 14, 14, to be the same or essentially the same size. Pansini’s description supports this finding as well by disclosing that locking buttons 30 of spring member 24 engage with apertures 12, 12 in the domestic pool pole and also engage with apertures in the foreign pool pole that are similar to apertures 14, 14 in the Appeal 2021-002037 Application 13/844,561 5 domestic pool pole. See Pansini col. 1, ll. 57–60, col. 2, ll. 18–26. Additionally, Pansini’s Figures 1–5 show apertures 12, 12 and 14, 14, respectively, in alignment with one another across the domestic pool pole’s upper and lower portions. Accordingly, one of ordinary skill in the art would understand that the size and relative position of the pairs of apertures 12, 12, and 14, 14 are the same, and if not, essentially the same. See id. at Figs. 1, 2, 4. We find that an attachment means, such as a straight pin having a circumference like that of locking button 30, can be positioned in apertures 12, 12 –– as well as tool handle 16’s apertures 20, 20 –– to retain brush 40.5 And, we find that the same or different attachment means, such as a straight pin having a circumference like that of locking button 30, can be positioned in apertures 14, 14 –– as well as tool handle 16’s apertures 22, 22 –– to retain brush 40. Accordingly, based on the size and relative positions of the pairs of apertures 12, 12 and 14, 14, respectively, there is adequate support for the Examiner’s finding that apertures 14, 14 corresponds with the claimed “selected pair or holes.” Therefore, the Examiner’s finding that the selected pairs of apertures 12, 12 and 14, 14 are “capable of retaining a cleaning tool without engaging any of said holes other than one pair of said selected pairs” is adequately supported. Thus, we sustain the Examiner’s rejection of claim 27 as anticipated by Pansini. 5 Pansini’s Figure 2 shows the pair of apertures 12, 12 retaining brush 40 without engaging the second pair of apertures 14, 14. Appeal 2021-002037 Application 13/844,561 6 Obviousness The Appellant argues that the Examiner’s rejections under 35 U.S.C. § 103, i.e., the obviousness rejections, as a group. Appeal Br., passim. For reasons that will become apparent, we will only specifically address the Examiner’s rejection of dependent claim 28 under 35 U.S.C. § 103 as unpatentable over Pansini in view of McFarland. The Appellant argues that McFarland is non-analogous prior art references. Id. at 71–72, 82–84; Reply Br. 10–11. The Appellant’s argument is not persuasive. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. See In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979); see also In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995)) (explaining “[t]he identification of analogous prior art is a factual question.”). With regard to the first prong of the analogous art test, the Appellant asserts that the Appellant’s field of endeavor is the swimming pool industry. See Appeal Br. 72 n.78. The Examiner finds that the Appellant’s field of endeavor is “tools and/or telescoping poles.” Ans. 17. The Examiner has the better position. The subject matter of the Appellant’s patent application is well represented by the title of the patent application is “TELEPOLE APPARATUS AND RELATED METHODS.” The Specification provides a Appeal 2021-002037 Application 13/844,561 7 more detailed explanation of the telepole. For example, the Field of the Invention section describes that the “invention relates to devices for cleaning swimming pools and similar things, and more specifically is directed to apparatus and methods involving an improved telescopic pole useful for (among other things) attachment to swimming pool cleaning tools.” Spec. 1 (emphasis added). The Specification discloses that telescopic poles may be used for applications beyond “clean[ing] swimming pools and similar things (e.g., fountains, spas – both above and below ground, fish ponds, etc.),” including “window washing tools, paint rolling tools, and concrete spreading/finishing tools.” Spec. 2; see id. at 29 (“The convenience provided by quick-releasing tools/handles is especially beneficial in applications of working with and finishing concrete wherein tools such as a bull float, trowel, rolling tamper, seamer, and various other tools or adapters are commonly used in conjunction with an extendable handle.”), 31 (original claim 3 (“The telepole of Claim 1, wherein the tool is a concrete finishing tool.”)); Figs. 16a–b, 17, 18a–e. In view of the foregoing, we determine that the Examiner’s finding that the Appellant’s field of the endeavor is tools and/or telescoping poles is adequately supported. See Appeal Br. 5 (“[the] Appellant’s pending application[]/appeal[] relate to telescoping/extension poles.”). The Appellant’s field of the endeavor also may be described as “devices for cleaning swimming pools and similar things” (Spec. 1), including telescoping poles useful for attaching a tool. See also Appeal Br. 5 n.12 (explaining the type of poles the present application relates to as, “[p]oles alone and/or in combination with detachable tools, such as ones that are useful for cleaning swimming pools.”). Appeal 2021-002037 Application 13/844,561 8 For the rejection of dependent claim 28 under 35 U.S.C. § 103, the Examiner relies on Pansini and McFarland. The Appellant does not argue that Pansini is a non-analogous prior art reference. Rather, the Appellant acknowledges that Pansini is in the same field of endeavor as the Appellant. Appeal Br. 72. The Appellant’s acknowledgement, however, is based on the faulty notion that the Appellant’s field of endeavor is limited to the swimming pool industry. See id. at 71–72, n.78. We find that Pansini is in the same field of endeavor as the inventor/Appellant. However, we make this finding on the basis that the inventor’s field of endeavor is tools and/or telescoping poles. This finding is also supported on the basis that the inventor’s field of endeavor is devices for cleaning swimming pools and similar things, including telescoping poles useful for attaching a tool. The Appellant argues that McFarland is not in the same field of endeavor as the Appellant’s invention. Id. at 71–72. As discussed above, the Appellant’s argument is based on a faulty notion that the Appellant’s field of endeavor is swimming pool poles and an assertion that McFarland’s field of endeavor is “a support bracket for holding a net.” Id. at 11, 72. The Appellant’s argument is not persuasive. We find that the field of endeavor of McFarland is the same as the Appellant’s field of endeavor, i.e., tools and/or telescoping poles. McFarland discloses its “invention relates . . . in particular, to an apparatus for skimming the top surface of pools of, e.g., water, and the volume immediately below of floating debris.” McFarland col. 1, ll. 7–9. As such, McFarland’s field of invention may be understood as: tools; devices for cleaning swimming pools and similar things; and the swimming pool industry. In response to the Appellant’s assertion that McFarland’s field of Appeal 2021-002037 Application 13/844,561 9 endeavor is a support bracket for holding a net (see Appeal Br. 11, 72, 83), we determine that the support bracket, by itself, is not tantamount to McFarland’s field of endeavor. Further, the Examiner also finds that McFarland is an analogous prior art reference because it is reasonably pertinent to the particular problem with which the applicant was concerned. Ans. 16, 19. The Appellant argues against this finding. Appeal Br. 82–84; Reply Br. 10–11. Even if we were to agree with the Appellant’s argument that McFarland is not reasonably pertinent to the particular problem with which the applicant was concerned, which we do not, McFarland’s field of endeavor is the same as the Appellant’s field of endeavor. Therefore, McFarland is an analogous prior art reference. See In re Deminski, 796 F.2d 436, 442. The remainder of the Appellant’s arguments relate to the age of the references and secondary considerations –– copying, long-felt but unsolved needs, and skepticism of others –– and rely, in varying degrees, on objective evidence. See, e.g., Appeal Br. 32–71. The Appellant argues that the Examiner “fail[s] to properly consider and weigh Appellant’s extensive objective evidence of non-obviousness,” including “substantial amounts (hundreds of pages) of objective evidence.” Id. at vi; see id. at 21–28. For example, the Appellant argues that a major competitor, Skimlite, copied the Appellant’s invention. Id. at 38; see id. at 39–45. The objective evidence supporting this argument includes an image taken of a video for a Skimlite product that the Appellant asserts has four attachments holes. The four attachment holes may be considered as generally equidistant from an end of a tube and are not aligned with each other in parallel with a central longitudinal axis of the pole. Id. at 42 (citing Declaration of Eric Resh 84, Appeal 2021-002037 Application 13/844,561 10 filed Oct. 21, 2019). The Appellant also shows evidence that a similar Skimlite product only had two holes prior to Skimlite having access to the Appellant’s product. Id. at 40–42. The Appellant’s argument is premised on the notion that the objective evidence of nonobviousness is attributable to the claimed invention. In this regard, we note that claim 28 recites “wherein each of the [at least four] attachment holes are at least generally equidistant from said end of said tube and said holes are not aligned with each other in parallel with a central longitudinal axis of the pole.” Appeal Br., Claims App. Independent claim 4 includes a similar recitation. Id. “If rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness, being but a legal inference from previously uncontradicted evidence, is dissipated. Regardless of whether the prima facie case could have been characterized as strong or weak, the examiner must consider all of the evidence anew.” See in re Piasecki, 745 F.2d 1468, 1473 (Fed. Cir. 1984) (citing In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)); Manual of Patent Examining Procedure (“MPEP”) § 2145, Consideration of Applicant’s Rebuttal Arguments (9th ed., rev. 10.2019, last rev. June 2020).6 Rinehart explains this process: When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over. 6 MPEP § 2145 recites: Office personnel should not evaluate rebuttal evidence for its ‘knockdown’ value against the prima facie case, Piasecki, 745 F.2d at 1473, . . . or summarily dismiss it as not compelling or insufficient. If the evidence is deemed insufficient to rebut the prima facie case of obviousness, Office personnel should specifically set forth the facts and reasoning that justify this conclusion. Appeal 2021-002037 Application 13/844,561 11 Though the burden of going forward to rebut the prima facie case remains with the applicant, the question of whether that burden has been successfully carried requires that the entire path to decision be retraced. An earlier decision should not, as it was here, be considered as set in concrete, and applicant’s rebuttal evidence then be evaluated only on its knockdown ability. Analytical fixation on an earlier decision can tend to provide that decision with an undeservedly broadened umbrella effect. Prima facie obviousness is a legal conclusion, not a fact. Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself. Though the tribunal must begin anew, final finding of obviousness may of course be reached, but such finding will rest upon evaluation of all facts in evidence, uninfluenced by any earlier conclusion reached by an earlier board upon a different record. Rinehart, 531 F.2d at 1052 (emphasis added). The record strongly suggests that the Examiner evaluates the Appellant’s rebuttal evidence against the Examiner’s conclusion that the subject matter of claim 28 is obvious. The Examiner does not evaluate all of the facts in evidence in a manner that is uninfluenced by the earlier conclusion. Simply put, the Examiner evaluates the Appellant’s rebuttal evidence only for its knockdown ability. For example, the Examiner explains, The majority of the response includes arguments and declarations which are not even specifically directed to the prior art of record or provide any evidence of why the prior art cannot be combined as in the rejection previously made. Thus, while all the objective evidence of non-obviousness has been considered, it has been determined as being NOT sufficient to outweigh the evidence of obviousness. Ans. 6 (emphasis added). Therefore, we are not convinced that the Examiner properly evaluates the objective evidence that the Appellant Appeal 2021-002037 Application 13/844,561 12 submitted. Rather, the Examiner appears to dismiss all of the objective evidence because it does not explain why the prior art cannot be combined as proffered in the Examiner’s rejection, in other words, for its knockdown ability. Thus, we do not sustain the Examiner’s rejections under 35 U.S.C. § 103. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 27 102(a) Pansini 27 28 103(a) Pansini, McFarland 28 29 103(a) Pansini, McFarland, Polzin, Lanzarone7 29 4, 5, 13–20 103(a) Pansini, Balint, McFarland, Polzin, Lanzarone8 4, 5, 13–20 Overall Outcome 27 4, 5, 13–20, 28, 29 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART 7 The rejection is stated in the alternative, but is addressed in the table as a whole because the outcome is the same for each alternative. 8 Supra, n.7.